Protecting your trademark abroad series - mexico

By Trish Sawhney

Photo by Jorge Aguilar on Unsplash

​The information in this guide has been provided by the Canadian Department of Industry. Please note that this guide does not constitute legal advice and is merely intended to act as an aid if you are considering global expansion.

Where is IP registered?
The Mexican Institute of Industrial Property (IMPI) is the decentralized agency responsible for the administration and registration of patents, trademarks, and industrial designs.

Trademarks

Mexican trademarks may consist of names, letters, numerals, figurative elements, holographic signs, 3-dimensional shapes, sounds, scents, the plurality of operating elements, image elements (including the size, design, colour, layout form, label, packaging and decoration) or any other elements that, when combined, distinguish goods or services in the market.

Filing System: Mexico follows a "registration" and "first-to-use" system for trademark rights. This means that any natural person may use a trademark in association with their goods and services without registration, but the right to exclusive use may only be obtained by registration.


Registration Period: In Mexico, a trademark is registered for 10 years and can be renewed every 10 years if it continues to be used.

• An owner of a trademark must file a Declaration of Use stating that the mark has been used as a trademark in Mexico after 3 years from the registration date.
• As in Canada, if your trademark remains unused in Mexico after the 3 years following registration, it may be challenged for non-use. 
• Madrid Protocol: As a member of the Madrid Protocol, Mexico can be designated in an international application filed via the Madrid System.

   
Language: Since Spanish is the official language in Mexico, consider protecting the Spanish translations of your trademark as well.

IP Enforcement
There are several ways to enforce your rights against unauthorized use of your IP in Mexico:

• The Mexican Customs Authority (Aduanas de México) help prevent counterfeit goods from entering Mexico.
• Since both Mexico and Canada are members of the North American Free Trade Agreement (NAFTA), IP disputes involving parties from both countries may be resolved through the dispute resolution mechanisms outlined in NAFTA.
• IP disputes may be brought before the IMPI, the INDAUTOR and the federal and civil authorities in Mexico. Infringement of IP rights may lead to civil and/or criminal charges.
• Mediation and arbitration, which are generally more informal, less adversarial, cheaper, and settlement-focused, can also be used as alternatives to going to court.
• If you suspect infringement, your can send a "cease and desist" letter to the alleged infringer informing them that you believe they have infringed on your IP rights and advising them to refrain from infringement.

Mexican courts can award varying remedies in IP disputes, including damages, punitive damages, a temporary or permanent injunction, an order prohibiting the importation, delivery or destruction of all infringed articles or an account of all profits made by the infringer. If you pursue a legal battle and win, there is always a chance that you will receive less money than you could receive through settlement proceedings.
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Interested in expanding your trademark protection into Mexico? Contact us today.